LeBron James Weighs in on “Taco Tuesday” Trademark Battle

Many people who use the phrase on a regular basis may not realize that “Taco Tuesday” is actually protected by a US trademark.

As NPR reported, the trademark is owned by Taco John's, a Wyoming-based fast-food restaurant chain with about 380 outlets.

Taco John’s claims on its website to have “started” the use of the “Taco Tuesday” phrase. Gregory’s Restaurant & Bar in New Jersey also used the mark as early as 1979, and applied for and obtained a federal trademark to use the phrase in connection with restaurants two years later.

Taco John’s was using the “Taco Tuesday” expression in its ads in 1979, around the same time as Gregory’s, but Gregory’s was the first company to seek federal trademark registration.

Federal trademark registrations can, in theory, last “forever” – unlike patents and copyrights, which convey intellectual property (IP) rights only for a defined and finite term.

However, federal trademarks must be properly maintained in order for a registrant to maintain ownership. The owner must submit evidence to the US Patent and Trademark Office (USPTO) showing that the mark is continuing to be used in commerce. Failure to do so will result in the mark being cancelled.

In 1989, when it was time to renew its trademark, Gregory’s failed to timely submit evidence of continued use and the USPTO cancelled its registration.

Taco John’s promptly filed its own application for the phrase, and it was granted.

Gregory’s then tried to get its mark back. Under US trademark law, when two applicants try to register the same trademark in the same field, the junior registrant (in this case, Taco John’s) has nationwide rights in the trademark, except for the geographic region in which the senior user (in this case, Gregory’s) can prove trademark use prior to the filing date of the federal registration.

Gregory’s and Taco John’s fought over the mark for three years. In the end, Taco John’s had the rights to use “Taco Tuesday” as a trademark in the entire US, except for New Jersey, and Gregory’s had rights only in New Jersey.

But Taco Bell – a far bigger Mexican-style fast-food chain – is now seeking to have the trademark cancelled.

Taco Bell recently filed a petition with the USPTO saying the phrase “Taco Tuesday” "should belong to all who make, sell, eat and celebrate tacos."

LeBron James, the Los Angeles Lakers superstar basketball player, has appeared in Taco Bell ads promoting Taco Tuesday specials – with the “Tuesday” bleeped out to avoid trademark infringement.

James issued a statement via Taco Bell that

‘Taco Tuesday’ is a tradition that everyone should be able to celebrate. All restaurants, all families, all businesses – everybody. Taco Tuesdays create opportunities that bring people together in so many ways, and it’s a celebration that nobody should own.

James once attempted, via his own company LBJ Trademarks, LLC, to trademark the phrase “Taco Tuesday” in three separate international classes: (1) online entertainment services featuring videos and social media posts, (2) social media advertising, and (3) downloadable audiovisual content -- but not restaurants.

James’ application was denied by the USPTO, which found it to be a “commonplace message.” James eventually abandoned his quest for the mark.

The lesson here? A trademark can be a valuable IP asset, and it’s important to maintain it so that it will last a long time.